General Electric Companyv.Asha Records, Inc.

Trademark Trial and Appeal Board

Jul 8, 1998

No. 91101856 (T.T.A.B. Jul. 8, 1998)

Paper No. 27
JQ
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
General Electric Company
v.
Asha Records, Inc.
_____
Opposition No. 101,856
to application Serial No. 74/643,224
filed on March 7, 1995
_____
David Goldberg, Mary L. Kevlin and Robin J. Adelson of
Cowan, Liebowitz & Latman for General Electric Company.
Andrea I. Brauer for Asha Records, Inc.
______
Before Simms, Quinn and Walters, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by Asha Records, Inc. to
register the mark shown below
Opposition No. 101,856
2
for “pre-recorded tapes, phonograph records and compact
discs featuring music.”1
Registration has been opposed by General Electric
Company under Section 2(d) of the Trademark Act on the
ground of likelihood of confusion. Opposer asserts that
applicant’s mark, when applied to applicant’s goods, so
resembles opposer’s previously used and registered mark
shown below
for musical sound recordings and video sound recordings, as
well as various electronic products and licensed
merchandise, as to be likely to cause confusion, or to cause

1 Application Serial No. 74/643,224, filed March 7, 1995, based
on a bona fide intention to use the mark in commerce. Applicant
subsequently filed an amendment to allege use setting forth a
date of first use anywhere of March 1, 1995 and a date of first
Opposition No. 101,856
3
mistake, or to deceive. Opposer owns registrations of the
mark for radios, microphones, and loud speakers;2 stereo

use in commerce of May 15, 1995. The word “Records” is
disclaimed apart from the mark.
2 Registration No. 195,475, issued February 25, 1925; thrice
renewed.
Opposition No. 101,856
4
speakers;3 television sets;4 and musical sound recordings
and musical video sound recordings.5
Applicant, in its answer, denied the salient
allegations of likelihood of confusion.
The record consists of the pleadings; the file of the
involved application; trial testimony, with related
exhibits, taken by each party;6 certified copies of
opposer’s pleaded registrations, applicant’s responses to
certain interrogatories, excerpts from printed publications,
and advertising materials and catalogs,7 all introduced by
way of opposer’s notices of reliance; opposer’s response to
one interrogatory, official records (two of opposer’s
registrations which were not pleaded), and excerpts from
materials identified as “printed publications,”8 made of

3 Registration No. 1,184,589, issued January 5, 1982; Section 8
filed.
4 Registration No. 1,184,590, issued January 5, 1982; combined
Sections 8 and 15 affidavit filed.
5 Registration No. 1,938,683, issued November 28, 1995.
6 Pursuant to a stipulation, opposer’s rebuttal testimony was
submitted in the form of a declaration.
7 Promotional materials and catalogs are not proper subject
matters for a notice of reliance. TBMP §708 (see cases cited
thereat). However, applicant did not object to this
introduction, but rather treated the evidence as being properly
of record. Accordingly, we have considered this evidence in
reaching our decision.
8 The excerpts appear to be pages from a catalog showing
merchandise licensed by opposer. As in the situation mentioned
above, such material is not proper for introduction into evidence
by way of a notice of reliance. Nonetheless, no objection
Opposition No. 101,856
5
record in applicant’s notice of reliance. Both parties
filed briefs on the case. An oral hearing was not
requested.
Opposer’s mark has been used for nearly 100 years in
connection with the sale of pre-recorded music and related
electronic products. The mark is based on Francis Barraud’s
painting entitled “His Master’s Voice” which depicts the
painter’s fox terrier (named “Nipper”) looking into a
phonograph player, with his head tilted quizzically to one
side as if listening. Over the years the mark has appeared
on records, CDs and tapes featuring recording artists such
as Elvis Presley, Jimi Hendrix, Perry Como, Bruce Hornsby
and ZZ Top. Over the past ten years, more than 175 million
records, tapes and CDs bearing the mark have been sold in
the United States. This represents over $1.1 billion in
sales. During this same time period, advertising and
promotional expenditures have exceeded $185 million. The
mark also has appeared on a wide variety of collateral
merchandise, and the mark has been the subject of many
articles appearing in printed publications.
Applicant took the testimony of David Horne, its
president. Mr. Horne explained the selection of applicant’s
mark as follows:

thereto was raised, but rather the material was treated as if
properly of record. Thus, we have considered this evidence.
Opposition No. 101,856
6
I chose Asha Records because that is my
daughter’s name, my eight-year-old
daughter at the time, and since I named
my daughter and she seemed to be a fresh
enough symbol, I figured with her name,
I’d have a--I’d have good luck. The
bunny rabbit came strictly because my
daughter had just lost her only bunny
rabbit. We just buried the bunny rabbit
in the yard, and she asked me to use it
as a logo or label or something--do
something to commemorate the rabbit.
And when I went looking for some symbol
to fit, I saw the grammaphone [sic] that
looked like a flower, and the rabbit and
the Asha Records all three together, it
looked like a winner to me. (dep., p.
8)
Mr. Horne went on to characterize applicant’s mark in the
following way:
As a rabbit watching a flower, which
includes music, under which I have my
daughter’s name. So what I have is what
my daughter wanted, and I also have a
relationship to something natural in the
music business, and to me, that’s what
worked. (dep., p. 25)
The record shows that applicant’s mark has been applied to
records, cassette tapes and CDs. Applicant has listed sales
under the mark in 1995 as $5,500 and zero dollars in 1996.
Advertising expenditures in 1995 were $30,000 (for
promotional CDs, videos, T-shirts and travel to conferences)
and $5,000 in 1996.
In view of opposer's ownership of valid and subsisting
registrations for its pleaded mark, there is no issue with
respect to opposer's priority. King Candy Co., Inc. v.
Opposition No. 101,856
7
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974). In any event, the record clearly establishes
that opposer began using its mark long prior to applicant’s
first use.
Our determination under Section 2(d) is based on an
analysis of all of the probative factors in evidence that
are relevant to the factors bearing on the likelihood of
confusion issue. In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973). The factors deemed
pertinent in this proceeding are discussed below.
With respect to the goods, opposer’s musical sound
recordings are, for purposes of our likelihood of confusion
analysis, legally identical to applicant’s tapes, records
and CDs featuring music. Moreover, applicant’s goods are
related to opposer’s electronic products. The parties’
goods are sold in the same channels of trade to the same
classes of purchasers. In addition, as pointed out by
opposer, musical sound recordings on records, CDs and tapes
are relatively inexpensive items and are purchased with
nothing more than ordinary care.
We next turn to consider the marks. Given the
identity, at least in significant part, between the parties’
goods, we note, at the outset, that when marks are applied
to identical goods, “the degree of similarity [between the
marks] necessary to support a conclusion of likely confusion
Opposition No. 101,856
8
declines.” Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992). In the present case, we find that the marks convey
sufficiently similar overall commercial impressions, as
applied to identical and substantially related goods, that
consumers are likely to ascribe a common source to the
goods. Both marks comprise a left-sided profile view of a
seated animal on the right peering into an old fashioned
phonograph player on the left. The presence of the words
ASHA RECORDS in applicant’s mark does not serve to
adequately distinguish the two marks, especially as applied
to identical goods. As often stated, the addition of a
trade name to one of two otherwise similar marks will not
serve to avoid a likelihood of confusion. First
International Services Corp. v. Chuckles Inc., 5 USPQ2d
1628, 1632 (TTAB 1988). As posited by opposer, the addition
of the words ASHA RECORDS may lead consumers to believe
mistakenly that applicant’s products are part of a division
of opposer or a line extension offered by opposer or one of
its divisions.
It hardly need be said that the fame of opposer’s mark
is a critical du Pont factor in opposer’s favor in this
case. Kenner Parker Toys v. Rose Art Industries, 963 F.2d
350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992)[“[F]ame of the
prior mark plays a dominant role in cases featuring a famous
Opposition No. 101,856
9
or strong mark.”] As indicated in its brief (p. 8),
“[a]pplicant readily admits to the fame of Opposer’s mark.”
Indeed, the record clearly establishes the widespread fame
of opposer’s mark. Opposer’s claim that its mark is famous
is supported by truly impressive sales and significant
advertising figures, and by stories about opposer’s mark.
The authors of some of the stories essentially characterize
opposer’s mark as one of the most enduring commercial
trademarks ever. Further, the record is devoid of any
third-party uses or registrations9 of similar marks for
goods of the type involved here.
Another factor that bears upon our determination is the
circumstances surrounding applicant’s adoption of its mark.
A party which knowingly adopts a mark similar to one used by
another for the same goods does so at its peril. In such
cases, all doubt on the issue of likelihood of confusion
must be resolved against the newcomer. Nina Ricci S.A.R.L.
v. E.T.F. Enterprises Inc., 889 F.2d 1070, 12 USPQ2d 1901
(Fed. Cir. 1989); Kimberly Clark Corp. v. H. Douglas
Enterprises, Ltd., 774 F.2d 1144, 227 USPQ 541 (Fed. Cir.
1985); and Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d
1768 (TTAB 1992). Here, Mr. Horne was aware, prior to his

9 The trademark search report is insufficient to make of record
the third-party registrations cited therein. Riceland Foods Inc.
v. Pacific Eastern Trading Corp., 26 USPQ2d 1883 (TTAB 1983). We
hasten to add that even if the third-party registrations were of
Opposition No. 101,856
10
selection of the involved mark, of the use of opposer’s mark
for goods identical to those of applicant. In fact, Mr.
Horne testified that he “grew up” with the “dog and
phonograph mark” and that “the mark was kind of everywhere.”
(dep., p. 18) Thus, out of an entire universe of trademarks
from which to choose, applicant chose, with full knowledge
of opposer’s mark, one which is similar to the mark used by
opposer since the beginning of the century.
Applicant offered, as noted above, an explanation for
the selection of the design portion of its mark (that is, an
animal next to a phonograph player). However, given Mr.
Horne’s prior knowledge of opposer’s mark, and the fame of
opposer’s mark, suffice it to say we have our doubts that
applicant’s adoption of its mark can be characterized as
purely an arbitrary choice. Specialty Brands, Inc. v.
Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281,
1285 (Fed. Cir. 1984)[“there is...no excuse for even
approaching the well-known trademark of a competitor, that
to do so raises ‘but one inference--that of gaining
advantage from the wide reputation established by [the prior
user] in the goods bearing its mark’....” Certainly, Mr.
Horne’s denial (dep., p. 19) that, at the very least, he had
in mind opposer’s mark when he created applicant’s mark,
strains credulity.

record, we would reach the same result on the merits of this
Opposition No. 101,856
11
Finally, given the low level of sales and advertising
under applicant’s mark, the absence of any evidence of
actual confusion between the parties’ marks is of very
limited probative value. In any event, the test is
likelihood of confusion, not actual confusion.
Decision: The opposition is sustained and registration
to applicant is refused.
R. L. Simms
T. J. Quinn
C. E. Walters
Administrative Trademark
Judges, Trademark Trial
and Appeal Board

case.